Under 35 U.S.C. § 315(b), a petitioner, real party in interest, or privy of the petitioner has only one year after service of a complaint alleging infringement to request inter partes review of the patent-in-suit. In LG Electronics, Inc. v. Straight Path IP Group, Inc., the PTAB held that the one-year time bar set by § 315(b) applies only to civil actions for patent infringement filed in U.S. federal district courts, and not to an investigation concerning patent infringement by the U.S. International Trade Commission (“ITC”). IPR2015-00196, Paper 20 (May 15, 2015).
The ITC is a federal agency with investigative responsibilities that include certain unfair import trade practices. For example, the ITC can investigate allegations that a party has imported into the U.S., sold for import into the U.S., or sold within the U.S. after import, articles that are made by a process covered by a valid and enforceable U.S. patent, and has thereby violated section 337 of the Tariff Act of 1930. See 19 U.S.C. § 1337(b). An ITC proceeding is commenced when a patent owner files a complaint with the ITC. Upon institution of an investigation, the ITC serves a copy of the complaint on the alleged infringer.
In LG Electronics, the patent at issue was the subject of multiple disputes, including an ITC investigation that was initiated more than one year before the IPR petition was filed. The Patent Owner argued that the IPR petition was time barred by the complaint in the ITC case. The Board disagreed.
In reaching a decision, the Board sought guidance in two earlier non-precedential PTAB opinions. The first opinion was entered in Amkor Tech., Inc. v. Tessera, Inc., where a petitioner’s infringement claim made over 3 years earlier in an arbitration did not trigger the time bar of § 315(b). IPR2013-00242, Paper 98, 5, 18–19 (Jan. 31, 2014). The Board reasoned that the terms of the statute, “action” and “served with a complaint,” were “harmonious with a civil action.” Among other reasons, the Board additionally noted that Congress did not use terms that could have invoked a forum like arbitration while such terms appear in other AIA provisions.
Although Amkor focused on the effect of infringement alleged in arbitration, it suggested that a similar conclusion should apply to an infringement complaint lodged in ITC and other non-judicial proceedings. This suggestion was implemented in the second opinion considered by the Board: Brinkman Corp. v. A&J Mfg., LLC., IPR2015-00056, Paper 10 at 7–8 (Mar. 23, 2015). In Brinkman, the Board rejected a patent owner’s argument that an IPR petition was time barred due to an ITC complaint served more than one year before the IPR petition was filed. Relying on Amkor and Brinkman, the Board reached a similar conclusion in LG Electronics.
Accordingly, the Board has made clear that administrative proceedings, including specifically ITC investigations concerning alleged patent infringement, do not trigger the time bar under 35 U.S.C. § 315(b). Rather, the time bar is only triggered by complaints served in actions pending in federal district court.